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The Long-Term Impact of Jacobsen v. Katzer 77

Posted by timothy
from the stabs-in-the-dark dept.
snydeq writes "Lawyer Jonathan Moskin has called into question the long-term impact last year's Java Model Railroad Interface court ruling will have on open source adoption among corporate entities. For many, the case in question, Jacobsen v. Katzer, has represented a boon for open source, laying down a legal foundation for the protection of open source developers. But as Moskin sees it, the ruling 'enables a set of potentially onerous monetary remedies for failures to comply with even modest license terms, and it subjects a potentially larger community of intellectual property users to liability.' In other words, in Moskin's eyes, Jacobsen v. Katzer could make firms wary of using open source software because they fear that someone in the food chain has violated a copyright, thus exposing them to lawsuit. It should be noted that Moskin's firm has represented Microsoft in anti-trust litigation before the European Union."
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The Long-Term Impact of Jacobsen v. Katzer

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  • As I can recall is that Katzer is an ass and will hopefully be remembered as such.

    Oh, you mean with regard to open-source licensing. Well, they're proven enforceable. Hooray!

    • Given that the conditions in open source licences apply to redistribution, this only affects software vendors who want to rip-off GPL (or similar) code for proprietary products.

      That is the point of these licences.

      Moskin is also very biased - it is very obvious in the law.com article that tries to spin the facts to imply that end users would be at risk, when the facts presented (read the last para) contradict this.

  • by Anonymous Coward on Thursday April 16, 2009 @06:10PM (#27604347)

    Katzer did considerably more than fail to comply with modest license terms. He filed a patent application for something he did not invent and claimed copyright to something he did not write. This was not a case of a minor license violation, but rather deliberate fraud. Consequently, the penalties he faced were much higher,

    • by Tanktalus (794810)
      You know that. I know that. The question is: will the CEOs and CIOs of big business care long enough to grasp the subtleties, or will they go with something they understand: shelling out cash to Microsoft (or maybe Apple) for the indemnification against patents and copyrights that they provide? Will they sic a lawyer on it long enough to get legal advice that may or may not turn out in their favour (the C*O's don't know), or just go with the "safe" choice?
      • Who cares what the CEOs do? Economics works like this: if they don't use open source while their competitors do, then their competitors will eat their lunch, all other things being equal.

        In reality, all other things are not equal, but the inroads and rapid evolution of open source in the last ten years suggests that the picture is substantially right for the next ten years.

        • by Korin43 (881732)
          No no no.. If they don't use open source while their competitors do, they will fail, but since they're too big to fail, they will receive bailouts. The companies that used open source and made a profit will fail because they can't compete against government sponsored monopolies.
      • I think you might be surprised (pleasantly, at that). I work for a fairly large U.S. corporation, and we have a butt-load of commercial hardware and software (Sun hardware + Solaris, IBM AIX, WebSphere, etc...), but are now making a very concerted push towards open source (Linux on X86/X86-64, JBoss, etc...). Even "old CIO" dogs can learn a new trick... when the IT budget starts shrinking.

        If only I could convince them to move from Windows on the desktop, to Linux. Oh well, take the victories when and whe

      • From the lead article: "a set of potentially onerous monetary remedies for failures to comply with even modest license terms"

        Just how difficult is it to comply with modest open source license terms? The more a law firm can manage to get you to think that task is tougher than it really is, the more $$ it can charge you.
  • Maybe, maybe not (Score:5, Informative)

    by rewt66 (738525) on Thursday April 16, 2009 @06:11PM (#27604361)
    IANAL. Having gotten that standard disclaimer out of the way, here's how I understand it. Jacobsen v. Katzer was a blatant, deliberate ripoff of open source code, followed (IIRC) by suing the original author for using his own code that the thief had claimed after stealing it. Said thief claimed that the open source license didn't mean anything, so that the thief's claim on the code was the only real one. Said thief lost the case. Now, I may have some of the foregoing details wrong. Don't take that as the gospel about what happened. But the point is, this case doesn't have much to do with accidental infringement. So let's take a specific example. Let's say open source project X unwittingly gets some code in it that is actually owned by company Y. Let's say that you, company Z, are using this code in a widget that you have shipped a large number (N) of. Now company Y is raising a stink. Do you have to either pay company Y for the use of their code or update all of your widgets in the field? Yes, unless company Y decides to be nice. (Note, however, that this is no different than a situation that Microsoft found itself in a few years back, so it's no different because the code was open source.) Are you liable for some large number of dollars times N to penalize you for stealing company Y's code? Probably not, unless your lawyers do a lousy job. You did it in innocence, which is completely different than the facts of this case.
    • by hurfy (735314)

      I hope this is a good summary because clicking the link to the case could cure one of clicking the links real quick. (the umm summary has like 150 links in it)

      In either case, this sounds like a pretty extreme case. Anyone stupid enough to charge the person they stole it from has it coming in any event and probably didn't use the smartest solutions elsewhere.

    • by bugi (8479)

      Isn't there a standard penalty for a lawyer who blatantly lies about the facts of a case?

      • by Tanktalus (794810)

        I think they're called "corporate attourneys." Or cops, but those aren't usually lawyers.

      • by KwKSilver (857599)
        Sanctions? Yes, thanks for asking. They are eventually elected to public office and become successful politicians of either US major party ... and filthy rich.
      • Isn't there a standard penalty for a lawyer who blatantly lies about the facts of a case?

        Yes, many of them end up serving long terms (even life sometimes) as an elected representative of the "people" in various state or national legislative bodies...

  • Is it a new risk? (Score:5, Insightful)

    by Todd Knarr (15451) on Thursday April 16, 2009 @06:13PM (#27604379) Homepage

    Is this really a new risk? If you're distributing software that includes a proprietary closed-source component, and someone upstream in the company that created that component illegally included copyrighted proprietary software in it, wouldn't that expose you to exactly the same risks for exactly the same reasons, and permit you exactly the same defenses? I don't see where open-source makes any difference here, in all cases (open-source and closed-source) where you redistribute someone else's software you have to trust that they haven't committed copyright infringement in what they're providing to you.

    Open-source is, if anything, less vulnerable to these risks. So far all the cases I've seen reported have involved the inclusion of non-licensed software (both proprietary and open-source) in closed-source proprietary products. The only allegations going the other way, of inclusion of unlicensed code in an open-source project, were SCO's allegations of the inclusion of SysV code in Linux and IBM shredded those so thoroughly you need a microscope to find the pieces (and in the process made a good argument that it's in fact SCO that's been including Linux code in their products in violation of the license).

    • If you buy software from a company X and it's closed source, how can you reasonably be expected to know there's something belonging to company Y in there? If I release a binary with someone else's code in it someone might notice if they bother to disassemble it (IANAP btw). This presupposes that the have a reason to go looking. On the other hand if I make the source available to anyone then it's a lot more likely that someone will notice.
    • by cenc (1310167)

      Very good point. Essentially, I believe there is a practical and legal aspect. One, there is no intent to steel the code, in the same way I go and rent a car, get pulled over, and find out the car is stolen. Chances are no one is going to hold me responsible.

      From a practical stand point, I could also see that if the code did come from and open source source, some company claiming it was stolen would very possibly not bother going after the person or organization because they view it as no money in it. That

  • This story is just another invitation for us all to engage in the FREEBSD vs. GPL debate all over again. In other words, more copyright strings retained or less copyright strings retained? Which is better?

    The railroad guy could have licensed his program freebsd, but he didn't want to because he wanted the GPL yield. He's happy and I'm happy for him (and for Stallman).

    The idea that the Courts should judicially convert GPL'd software into FREEBSD'd software is really evil. Corporations would freak out of

    • For hardware, like a Tivo or a model railroad interface, if you don't want people to see the code, it seems that using code from BSD-style licensed code would be the best thing to use.

      If you don't care if people see the code, then use code from a GPL project and release your code as per the license.

      Anyone smart enough to build a model railroad interface should be smart enough to know the difference between the two licenses.

    • by chromatic (9471)

      The railroad guy could have licensed his program freebsd, but he didn't want to because he wanted the GPL yield.

      If you had read any of the material about the case, you might have noticed that Jacobsen in fact used the Artistic License.

    • bingo! GPL only works as long as the rules are the same for EVERYBODY. Courts have no less right to take copyright away from somebody who uses GPL than they do to take copyright away from Microsoft when they're a monopoly... and we haven't seen that happen, have we.

    • Actually it was not GPL licensed. Part of the problem is that he used the artistic license. RTFA.

  • by tnk1 (899206)

    I mean, so what?

    Commercial companies use IP of other commercial companies all of the time. That doesn't mean that the customers can't fall prey to someone else's copyright/patent claims, either directly, or as a result of a higher price that is passed on to the customer as the result of legal defense.

    I understand that there may be a feeling that there's no no legal department for an Open Source project, so it may have more issues with IP, but honestly, that's a misconception. Any project that has gained a

  • by Vellmont (569020) on Thursday April 16, 2009 @06:20PM (#27604449)

    If you know even a tiny amount about the case, it actually was about commercial closed source software that violated the GPL. So if this is going to affect businesses opinions of software and risk, why is commercial software somehow immune from FUD?

    It seems to me that open source software has LESS of a change of a license violation, for the very fact that anyone can look for anyone license violations. Closed source software is the one with the potential for all those scary skeletons in the closet. If you're to believe the Microsoft lawyer, I guess those closed source software operations should start shitting bricks.

    • It seems to me that open source software has LESS of a change of a license violation

      Not necessarily, a particular company might discover that some of their copyrighted code has made it into an open source project, but then wait until some large company with deep pockets starts using it in their product. The copyright holder could then conveniently "discover" the infringing code and proceed to sue the large company for infringement (this is a similar scenario to the "submarine patent" which surfaces and attacks when there are good targets available).

    • by chromatic (9471)

      If you know even a tiny amount about the case, it actually was about commercial closed source software that violated the GPL.

      No, it wasn't. It has only a tangential connection to the GPL.

  • Hmmm.. (Score:1, Informative)

    by drewsup (990717)
    From the summary... It should be noted that Moskin's firm has represented Microsoft in anti-trust litigation before the European Union." and just how is that working out for them... LOL
    • Re: (Score:1, Insightful)

      by Anonymous Coward

      Fine. They're Lawyers. They're getting paid by the hour, not by the success.

  • Hey, the guy is talking his wallet.

    Sure, you can find a legal downside to just about anything. And he has worked hard at it for his employeers who must feel threatened.

    Yes, there is a slim chance that something untoward has happened in the open-source development chain. Most likely proprietary code being inadvertantly included. However, the likely rememdy for innocent use of such code is likely to be zero.

    It was the blantant ripoff nature that attracted the penalties. Of course, this confusion is gri

  • by caseih (160668) on Thursday April 16, 2009 @06:22PM (#27604473)

    The reality is that free and open source code is no different in *any* way from code from any other source. If it's not yours you cannot legally use it, _unless_ you abide by the licensing terms of the licensor.

    It astounds me how many companies get trapped thinking that copyright is somehow different for free and open source software. Boggles the mind. It also boggles my mind that companies buy into the idea that things like the GPL can "infect" the company's IP. In a corporate world stuffed full of lawyers--IP lawyers even--how such basic misunderstandings of copyright law can be so widespread in industry is really disheartening.

    • It astounds me how many companies get trapped thinking that copyright is somehow different for free and open source software.

      The association appears to have been started or gained currency after Steve Ballmer referred to Linux in an 2001 interview [theregister.co.uk] as a "cancer that attaches itself in an intellectual property sense to everything it touches."

    • Re: (Score:3, Insightful)

      by Mr. Beatdown (1221940)
      GPL can "infect" a company's IP. And that's not a bug, it's a feature. RMS has said so [gnu.org] himself and others [gnu-pascal.de] are also quite clear on this.
      • by ion.simon.c (1183967) on Thursday April 16, 2009 @10:12PM (#27606675)

        You said:

        GPL can "infect" a company's IP. And that's not a bug, it's a feature. RMS has said so [gnu.org] himself and others [gnu-pascal.de] are also quite clear on this.

        The GPL is no more infectious than the "you can't sell the software that you build with this tool" clause of the license that accompanied "student" versions of MSFT's Visual C++ 6 and 7.

        From the first link:

        GPL and NDA

        * To: gcc at gcc dot gnu dot org
        * Subject: GPL and NDA
        * From: Richard Stallman
        * Date: Thu, 19 Jul 2001 05:07:10 -0600 (MDT)
        * Reply-to: rms at gnu dot org

        GPL-covered code may not be distributed under an NDA.
        To do so is a violation of the GPL.

        If someone asks you to sign an NDA for receiving GPL-covered code that
        is copyright FSF, please inform the FSF immediately. If it involves
        GPL-covered code that has some other copyright holder, please inform
        that copyright holder, just as you would for any other kind of
        violation of the GPL.

        It is possible for a person or company to develop changes to a
        GPL-covered program and sign an NDA promising not to release these
        changes *to anyone*. This is a different case. As long as these
        changes are not distributed at all, a fortiori they are not
        distributed in a way that violates the GPL.

        However, if and when the changes are distributed to another person or
        outside the company, they must be distributed under the terms of the
        GPL, not under an NDA.

        This doesn't have anything to do with the licensing of works that derive from GPL-licensed code. Your inclusion of this information makes you look either illiterate or careless.

        From the second link:

        From: Phil Nelson
        Subject: Inaccurate information in `GNU' section
        Date: 23 Apr 2004, 09:33:30

        Hash: SHA1

        On Thursday 22 April 2004 11:45 pm, Peter N Lewis wrote:
        > > > I'm confused by this. If it "does not contain code from any
        > >
        > >> GPL-covered software", then surely you can release it under any
        > >> license you feel like, whether it can run stand-alone or not. If I
        > >
        > >A program can be free of code from a GPL-covered program, but it links
        > >with a library licensed under the GPL, then it has to be under the GPL
        > >as well. It is this catch, if you will, that led to the LGPL.
        >
        > This could only be true if you ship the binary with it linked.

        First, the disclaimer, IANAL.

        Second, I wrote gdbm for the FSF and have had many many conversations with Mr.
        Stallman about the GPL and how it applies to libraries. The key to the GPL
        is the understanding of "derivative work". I'll use gdbm as an example.

        If code directly calls any of the gdbm functions, it *is* a derivative work.
        Therefore, any work that directly calls gdbm functions and is distributed
        must be distributed under the terms of the GPL. Of course, the GPL is
        transitive, thus any program that has a call path that ends up in a gdbm
        function is required to be under the GPL. (If distributed.)

        If your code is written for the original dbm interface it is not a derivative
        work of gdbm, even if you happen to use the dbm interface to gdbm.
        It would be considered a derivative work of dbm.

        I don't know if this would stand up in a court of law, but I'm very sure this
        is what Mr. Stallman intended for the GPL. I have requested that gdbm be
        put under the LGPL so that programs that use gdbm don't have to be under the
        GPL, but he has chosen to keep the GPL on gdbm. Therefore, whenever people
        ask about gdbm, the GPL and their programs, I must tell them that if they
        plan to distri

      • Re: (Score:2, Insightful)

        by caseih (160668)

        Nope. Wrong. Sigh. Same old FUD and misconception. Let's repeat. No GPL'd code cannot "infect" your own IP. If you are using GPL'd code without abiding by the license, you find yourself in a situation where you have these alternatives:

        1. Keep the GPL'd code in your project and re-license your code to be in compliance with the GPL.
        2. Remove the code in question, since you don't have any legal right to use it.
        3. Negotiate licensing and royalty terms with the copyright holder to use their code in a way co

        • Re: (Score:1, Insightful)

          by Anonymous Coward

          Let's repeat.

          Yeah if you do that enough times, maybe it will become true!

          You just explained in your #1 bullet point exactly how it is capable of infecting your code. You include it in your project and the whole thing becomes GPL if you distribute the binary even once. Even if you take it out and close it later, you've been forced to expose your source code to the whole world.

          This is what any reasonable person would call "viral". GPL zealots don't like that label of course, and refer to it as "FUD", but in every single r

          • Re: (Score:3, Insightful)

            by Olivier Galibert (774)

            Let's repeat.

            Yeah if you do that enough times, maybe it will become true!

            You just explained in your #1 bullet point exactly how it is capable of infecting your code. You include it in your project and the whole thing becomes GPL if you distribute the binary even once. Even if you take it out and close it later, you've been forced to expose your source code to the whole world.

            No it doesn't become GPL. Changing the license on your code is not one of the remedies a court can decide. The court can only decide on injunction against distributing the code, money and in extreme cases jail.

            The only way the license can change on your code is if you decide it, possibly through a settlement.

            OG.

          • by Rysc (136391) *

            If I were to go out and find a copy of the Windows source code that was leaked a while back and put some of it in to my program then I have 'infected' my IP in precisely the same way.

            I don't have the OPTION of relicensing my code, because MS does not find that an acceptable solution, but my other options are the same.

            Relicensing your code is one possible remedy to a copyright violation when the GPL is involved. Would you prefer it if the GPL denied you this option and always demanded royalties? You might sa

            • Mod parent up. Every argument against the GPL that I have seen boils down to the above.

              To summarize, if you do not want to abide by the license the copyright owner gives to their software, then you can: attempt to buy it from them under a different license, use different code under a license you agree with, or write it yourself. It is the same with closed source. By releasing their code under the GPL, they are giving you those options plus the option to use and modify the code for free as long as you comply

      • That's silly, it can't "infect" your IP. It can however wreck your plans for distribution. You're ALWAYS free not to mix the code with yours and your free to unmix the code and not distribute binaries. Once the binaries are in the wild it gets sticky, but courts and arbitration has generally been OK with companies withdrawing offending distributions then releasing fixed ones with the GPL parts properly segregated. I don't think any OSS projects have gotten closed binaries actually opened up, and I don't

      • by Carewolf (581105)

        GPL can not more infect your IP than any other non-licensed code. To find real comparable examples, look at the Video for Windows vs QuickPlay case. Microsoft copied code from Apple they had no valid license for. This did not mean Apple owned their code, or that every Microsoft user with illegal Apple code had to pay Apple. No Microsoft removed to infringing code and payed a reasonable fine.

    • by mark0978 (1052438)

      Part of the reason that IP Laws are so screwed up is that Lawyers are involved. They are hired shills looking to find some way to benefit their client regardless of what bullshit logic they have to use to make it appear OK.

      Witness the Bush admin and all of its "Legal opinions" that completely violate the constitution.

  • In the Free Software world we don't eat each other.

  • Yeah the only reason Moskin has concerns is due to the propensity for the proprietary world to steal code, ie violate the licensing terms and NOT want to suffer the consequences. To bad. You think Microsoft would extract their pound of flesh for violating their licensing terms? Oh wait, why don't you go ask those who have had a visit by the BSA.
  • So basically we are damned if we use Microsoft's products because of various other reasons, and damned if we use FOSS ? Wheres the middle here ?
  • Two points (Score:4, Informative)

    by MSG (12810) on Thursday April 16, 2009 @06:48PM (#27604759)

    It's important to bear two things in mind:

    1: The financial impact in this case was a result of Katzer's refusal to comply with the license. It was not an automatic result of his use of the code in question, but his failure to take corrective action when notified of his infringement.

    2: Proprietary code may include proprietary components in violation of their license just as easily as it can contain Free Software components in violation of their license. The risk involved in using code licensed from a third party carries exactly the same risks whether or not it is Free Software.

  • Total FUD (Score:4, Insightful)

    by fermion (181285) on Thursday April 16, 2009 @07:07PM (#27604955) Homepage Journal
    and I don't use trendy acronyms lightly.

    There is always a risk with using software for any purpose, be in as an end user, developer, or whatever. It is up to the user and the administrators to insure compliance. The only time an issue will every come up, be it in open, closed, or revolving software will be when the assumption is made that the software, code, ideas can be used for free, with no real or opportunity costs. Honestly, this assumption is made quite often, and every once in a while someone is caught. Fines are put into place to deter others from doing the same.

    So nothing really changes. If one is a legitimate business, one still needs to insure that all supplies are kosher. Assuming that somehow the laws of physics have changed just because are going on the internet and getting stuff for free has gotten many a bussiness in trouble long before this ruling.

    • by Xtifr (1323)

      and I don't use trendy acronyms lightly.

      Trendy? I'm pretty sure that it dates back to the days of IBM vs. Amdahl et. al, i.e. before Microsoft was even a gleam in BG's eye. In fact, according to Wikipedia [wikipedia.org], it was coined circa 1975 by Gene Amdahl (shortly after he left IBM for the second and final time) to refer to IBM at the height of their power and influence. I think that 30+ years of currency takes it a little beyond the "trendy" category--at least in this industry.

      But you're right, it seems to fit all-too-well here, even if you consider it

  • by burnin1965 (535071) on Thursday April 16, 2009 @07:37PM (#27605221) Homepage

    ...even when using source code licensed under open source terms!!!

    And all these corporations using open source software to run their business are at risk of violating the terms of those licenses and will now drop open source like a sub-prime mortgage derivative laundered ten times over.

    Oh, wait, it was a proprietary product that violated the open source license....ZOMG is right, proprietary vendors are screwed, how can you know if your closed source vendor has stolen open source code until after you've invested in using their product and put your business at risk.

    Gee, I guess its just one more reason to use open source software from open source vendors. Who knows what kind of trouble those closed source vendors are getting you into.

  • It means its even more important to use a well known open source license so there are no hidden gotchas.

  • If you try to defraud open source developers, you'll get nailed to the wall by courts. If you make an honest mistake, the courts take that into account and are lenient.

    You're at far greater risk of enforcement action from Microsoft and their goons; unlike open source, where you're only at risk if you deliberately try to violate the license, organizations like the BSA regularly impose high costs on businesses.

  • "Moskin's firm has represented Microsoft in an anti-trust case before the European Court " - which they lost/
    Not to dump on Moskin's firm, because Microsoft did themselves no favours at all, but there should only be two sorts of lawyer who try to influence the law outside the courtroom: those elected politicians, and those who have retired.
  • by TheoMurpse (729043) on Friday April 17, 2009 @09:15AM (#27610983) Homepage

    For those who care, TIPLJ has a scholarly article in their latest issue about Jacobsen v. Katzer. Robert W. Gomulkiewicz, Conditions and Covenants in License Contracts: Tales from a Test of the Artistic License, 17 Tex. Intell. Prop. L. J. (Forthcoming 2009). [utexas.edu] The abstract:

    The Federal Circuit upheld the Artistic License in Jacobsen v. Katzer, establishing at long last that open source licenses are enforceable. Although that outcome received most of the headlines, the caseâ(TM)s greater significance lies elsewhere. Jacobsen v. Katzer teaches valuable lessons about conditions and covenants in license contracts, lessons that apply to licenses of all persuasions. Moreover, the case raises an important question about the interplay between contract and intellectual property law: Can licensors manipulate the distinction between covenants and conditions in such a way that upsets the delicate balance in copyright law? This article explores the lessons taught by Jacobsen v. Katzer and the open issue that it leaves, concluding with a proposal that supports the business model innovation characterized by open source licensing.

  • Consider the Source. Microsoft FUD

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